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Does a cover band's use of a singer's first name infringe trade mark rights in a celebrity's name?

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv078, first published online: April 23, 2015

In Ciao Rino the Court of Cassation ruled that a cover band, named ‘Ciao Rino’ after the first name of a famous singer whose songs it performed, did not infringe the trade mark rights in the name of that singer: since the ‘Ciao Rino’ sign only included the first name of the artist, it fell outside the statutory trade mark protection for celebrities' names.

Legal context

Under the Italian legal system the legal basis for the trade mark protection of celebrities' names can be found in Article 8(3) of the Code of Intellectual Property (CIP). This provision lays down that the names of a person, if famous, may be registered as a trade mark or may be used by the person holding the right or with his or her consent. Further, under Article 8(3) CIP, a third party may lawfully use the name of a famous person as a distinctive sign only with the consent of the right holder.

Facts

Rino Gaetano

Rino Gaetano, an iconic Italian musician and singer-songwriter, died in a car crash in 1981 when he was at the peak of his artistic career. The plaintiff, GA, was Rino Gaetano's sister and heir. With fans still loving the works of Rino Gaetano even after his death, GA decided to create a cover band that would play only the songs of her brother. The band was named ‘Ciao Rino’ after the messages left by fans on the singer's grave. GA also acted as manager of the band; in 2001 she successfully filed an application to register ‘Ciao Rino’ as a trade mark. The defendant, DA, was the leading singer and frontman of the Ciao Rino band. After a while DA started to modify the lyrics of the songs by Rino Gaetano and, in 2002, DA left the Ciao Rino band to create his own cover band of the same singer while continuing to use the ‘Ciao Rino’ sign for the activities of his brand new act.

GA sued DA in the District Court of Rome. The plaintiff asked the court to establish that she was the owner of the ‘Ciao Rino’ trade mark and that DA infringed her trade mark rights. As heir to Rino Gaetano, she also claimed her right to oppose the changes made by DA to the works of her brother because such changes were detrimental to the honour and reputation of the deceased singer. DA replied that he had created the ‘Ciao Rino’ mark and also argued that he and his cover band had been using this sign for a period of three years before GA applied to register it as a trade mark. In the light of the above, DA pleaded that he had acquired prior rights in the ‘Ciao Rino’ mark.

The District Court of Rome accepted DA's prior rights claims and dismissed GA's trade mark infringement action. The District Court also rejected GA's claims for the violation of moral rights since she was found to have no standing to enforce those rights. All the findings of the District Court were upheld on appeal by the Court of Appeal of Rome. GA challenged the judgment of the appellate court before the Court of Cassation. In support, she pleaded that the lower courts erred in applying Article 8 CIP and in allowing the prior rights defence.

Analysis

From the outset the Court of Cassation (the Court) took the view that the appeal had to be struck out on procedural grounds. GA had claimed for the first time before the Court of Appeal of Rome that Article 8(3) CIP empowered her to prohibit DA from using the ‘Ciao Rino’ mark. By doing so, the plaintiff infringed Article 345 of the Italian Civil Procedure Code which disallows the submission of new facts and claims before appellate judges. Notwithstanding that, the Court considered the merits of the case, focusing in particular on whether GA could successfully invoke the protection in Article 8(3) CIP and concluding that GA's claims should be dismissed on the merits since the facts of the case did not meet the requirements for the application of Article 8(3) CIP.

First, the Court dealt with the question whether the first name ‘Rino’ included in the ‘Ciao Rino’ mark could be considered as a well-known name for the purpose of Article 8(3) CIP. No, said the Court, which assumed that name of Rino Gaetano was well known (this was a safe assumption, considering how popular his songs were and still are in Italy). However, the concept of ‘name’ in Article 8(3) CIP should be construed as embracing the first name and especially the last name of a well-known person. The Court stressed that it is the last name which constitutes the element that identifies and characterizes the famous name. Secondly, from the motions submitted by the plaintiff it emerged that GA effectively gave DA consent to use the ‘Ciao Rino’ mark. Accordingly, the Court ruled out the submission that DA had illegitimately used the mark in question without the consent of the owner. Thirdly, the Court focused on the issue of the prior rights. Though it acknowledged that it was uncontroversial that GA was the owner of the ‘Ciao Rino’ trade mark, the Court agreed with the lower courts that DA had gained prior rights in the litigated mark by using it before registration in a local ambit. DA thus had the right to continue using the ‘Ciao Rino’ mark locally in accordance with Article 12 CIP (which allows a third party that used a mark before it was registered by the right holder to use it within a local ambit).

Practical significance

The Ciao Rino judgment confirms that Article 8(3) CIP can be successfully invoked only against third parties that use a mark which is comprised of the first name as well as the last name of a well-known person. The principle that the name of well-known person includes both first and last names was laid down by courts on the application of the provisions in trade mark legislation previously in force corresponding to the current Article 8(3) CIP (see, for example, District Court of Milan, judgment of 17 November 1958, Temi, 1959, p. 152). Ciao Rino is consistent with this case law. That said, it can be argued that the right holder can rely on Article 8(3) CIP to object to the third parties' use of marks comprising just the first name of a well-known person when that person became famous with the public with his first name and she was essentially identified with it. However, in Ciao Rino GA could not invoke this interpretation of Article 8(3) CIP, since Rino Gaetano became famous with his full name.

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